Offc Action Outgoing

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION: TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. To do so, enter the U.S. application serial number for this application and then select “Documents.” The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. See 15 U.S.C. §1141h(c). See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.

The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 1852317. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.

Applicant has applied to register the mark “MICROPORT” for “Medical devices for use in the fields of cardiovascular, neurovascular, endovascular, peripheral vascular, diabetes management, electrophysiological, orthopedics and surgical management; medical apparatus and instrument, namely, needles for medical purposes; catheters; cannulae; surgical instruments and apparatus; pumps for medical purposes, namely, insulin pumps; cases fitted for medical instruments; trocars; testing apparatus for medical purposes, namely, blood testing apparatus for medical purposes; apparatus for use in medical analysis and testing; diagnostic apparatus for medical purposes; heart pacemakers; medical guidewires; stents; electrocardiographs; galvanic therapeutic appliances; electrodes for medical use; gloves for medical use; feeding bottles; condoms; surgical implants artificial materials; orthopaedic articles; suture materials; accessories for surgery, namely, scalpel, forceps, injectors, dilator, catheter sheath, coronary dilatation device, adapting pipe for surgical use, guidewire twister for surgical use; remote medical system for automatic surgery including apparatus, equipments and softwares for surgery, namely, operation console for surgeon, surgical robot, namely, a mobile platform consisting of a mechanical arm, a photographic arm and surgical instruments, for use alongside an operating table to assist with robotic surgeries, three-dimensional video imaging platform for surgical use”. The cited registered mark is “MICROPORT” for “implantable injection portals with delivery catheters for percutaneous injection of fluids”.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

COMPARISON OF THE MARKS

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); TMEP §1207.01(b).

In this case, applicant’s mark is “MICROPORT” is identical to the cited registered mark “MICROPORT”. Where the marks of the respective parties are identical or virtually identical, the relationship between the relevant goods need not be as close to support a finding of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a).

COMPARISON OF THE GOODS

With respect to applicant’s and registrant’s goods, the question of likelihood of confusion is determined based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).

Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).

In this case, the identification set forth in the application and registration has no restrictions as to nature, type, channels of trade, or classes of purchasers. Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers. Further, the application uses broad wording (“Medical devices for use in…”, “apparatus for use in medical analysis and testing”) to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification.

REFUSAL ONLY APPLIES TO GOODS IN CLASS 010

The stated refusal refers to International Class 010 only and does not bar registration in the other classes.

Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:

(1) Deleting the class to which the refusal pertains;

(2) Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition in the classes to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).; or

(3) Amending the basis, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.

IDENTIFICATION OF GOODS

CLASS 005

The identification of goods is indefinite and must be clarified as indicated below in bold. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. The goods listed as “preparations for destroying vermin” are duplicated, the second instance of these goods has been deleted.

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods and/or services from that assigned by the International Bureau in the corresponding international registration. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, an applicant may not transfer goods and/or services from one existing international class to another. 37 C.F.R. §2.85(d); see TMEP §§1402.07(a), 1904.02(c).

Therefore, any modification to this wording must identify goods in International Class 005, the classification specified in the application for these goods.

The following substitute wording is suggested, if accurate:

“Pharmaceutical and veterinary preparations for {specify disease or condition to be prevented or treated or the health goal to be achieved, e.g., animal skincare, treatment of infectious diseases}; sanitary preparations for medical purposes; dietetic food and substances, namely, {indicate types of food, e.g., pasta, crackers, yeast extract}, adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; medical plasters, materials for dressings, namely, {indicate type, e.g., wadding for dressings and gauze for dressings}; material for stopping teeth, dental wax; disinfectants, namely, {indicate Class 005 type of disinfectant, e.g., disinfectants for medical instruments, all purpose disinfectants}; preparations for destroying vermin; fungicides, herbicides; medicines for human purposes for {specify disease or condition to be prevented or treated or the health goal to be achieved, e.g., pain relief}; pharmaceutical preparations for {specify disease or condition to be prevented or treated or the health goal to be achieved}; medicines for veterinary purposes for {specify disease or condition to be prevented or treated or the health goal to be achieved}; X-ray diagnostic preparations for medical purposes, namely, {indicate Class 005 common commercial names of the goods, e.g., barium, x-ray contrast agents}; dietetic foods adapted for medical purposes, namely, pasta and crackers; air purifying preparations; belts for sanitary napkins towels; magnetic bracelets for medical purposes; alloys of precious metals for dental purposes”, in Class 005

CLASS 009

The identification of goods is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

Therefore, any modification to this wording must identify goods in International Class 009, the classification specified in the application for these goods.

The following substitute wording is suggested, if accurate:

“Surveying machines and instruments; material testing instruments and machines for testing {indicate generally what is being testing and/or the qualities being tested e.g., semiconductors, printed circuit boards, metal strength}; teaching apparatus, namely, {indicate Class 009 common commercial names of the goods, .e.g., medical diagnostic simulators for use as teaching aids for {specify nature of procedures, e.g. endoscopy, laparoscopy, angioplasty}}; laboratory apparatus and instruments, namely, pre-packed columns for use in chemical synthesis; electronic measuring device, namely, {indicate Class 009 common commercial name or what is being measured, e.g., electronic sensors for measuring solar radiation, electronic device for measuring distance}; optical apparatus and instruments, namely, {indicate Class 009 common commercial name of the goods, e.g., optical lenses, optical cables}; cables, electric; semi-conductors; remote control telemetering machines and apparatus; electrolysers; radios; weighing apparatus and instruments; data processing apparatus”, in Class 009

CLASS 010

The identification of goods is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.

Therefore, any modification to this wording must identify goods in International Class 010, the classification specified in the application for these goods.

The following substitute wording is suggested, if accurate:

“Medical devices, namely, {indicate Class 010 common commercial names of the goods, e.g., pulse measuring device, surgical devices and instruments} for use in the fields of cardiovascular, neurovascular, endovascular, peripheral vascular, diabetes management, electrophysiological, orthopedics and surgical management; medical apparatus and instrument, namely, needles for medical purposes; catheters; cannulae; surgical instruments and apparatus; pumps for medical purposes, namely, insulin pumps; cases fitted for medical instruments; trocars; testing apparatus for medical purposes, namely, blood testing apparatus for medical purposes; apparatus for use in medical analysis and testing, namely, {indicate Class 010 common commercial names of the goods, e.g., audiometers, multi-drug testing cups}; diagnostic apparatus for medical purposes, namely, {indicate Class 010 common commercial names of the goods or their use, e.g., diagnostic apparatus for the detection of cancer, MRI diagnostic apparatus}; heart pacemakers; medical guidewires; stents; electrocardiographs; galvanic therapeutic appliances, namely, {indicate Class 010 common commercial names of the goods or their use, e.g., static electric therapy apparatus} ; electrodes for medical use; gloves for medical use; feeding bottles; condoms; surgical implants comprised of artificial materials; orthopaedic apparatus and instruments for diagnostic and therapeutic use; suture materials; accessories for surgery, namely, scalpel, forceps, injectors, dilator, catheter sheath, coronary dilatation device, adapting pipe for surgical use, guidewire twister for surgical use; remote medical system for automatic surgery including apparatus, equipments and softwares for surgery, namely, operation console for surgeon, surgical robot, namely, a mobile platform consisting of a mechanical arm, a photographic arm and surgical instruments, for use alongside an operating table to assist with robotic surgeries, three-dimensional video imaging platform for surgical use”, in Class 010

An applicant may only amend an identification to clarify or limit the goods and/or services, but not to add to or broaden the scope of the goods and/or services. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL: Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner). 37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01. If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response. 37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01. Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other federal territories and possessions of the United States. See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01. Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing. See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02. The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing. 37 C.F.R. §2.193(d); TMEP §611.01(b).

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal). See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01.

DESIGNATION OF DOMESTIC REPRESENTATIVE: The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served. TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2). Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

/Ernest Shosho/

Attorney

Law Office 119

U.S. Patent & Trademark Office

571-272-9705

ernest.shosho@uspto.gov

TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

All informal e-mail communications relevant to this application will be placed in the official application record.

WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.

PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.

Offc Action Outgoing

MICROPORT

Shanghai MicroPort Medical(Group) Co.,Ltd

Offc Action Outgoing

Offc Action Outgoing [image/jpeg]